Friday, July 26, 2013

FACEMAIL Falls on its Face When Faced with Famous FACEBOOK Mark

What did Think Computer think would happen to its application to register FACEMAIL for email and instant messaging services, when faced with the FACEBOOK mark? The Board sustained Facebook's Section 2(d) opposition, finding the applied-for mark likely to cause confusion with FACEBOOK, registered in standard character and design form for, inter alia, instant messaging services. Impressive survey results, media evidence, and user data convinced the Board that FACEBOOK is a famous mark, entitled to a broad scope of protection. Facebook, Inc. v. Think Computer Corporation, Opposition 91198355 (July 23, 2013) [not precedential].

According to the evidence, Facebook has some 200 million user accounts in this country, and has received extensive and continuous media attention. Facebook's survey expert, Dr. Gerald L. Ford, found that approximately 95% of the general public recognize the FACEBOOK mark as referring to a social networking site. and about 98% of past and potential social network users recognize the mark. The Board concluded that FACEBOOK is famous, and its fame is "particularly significant because the evidence shows that it is well known to the general public as well as to users of social networking services." Of course, fame, when proven, plays a dominant role in the likelihood of confusion analysis.

Because the involved services are identical in part, the Board presumed that the channels of trade and the classes of purchasers (ordinary consumers) are the same.

As to the marks, the Board pointed out for the zillionth time that when the services are identical, a lesser degree of similarity is necessary to support a finding of likely confusion. The word "face" is the dominant element of both marks, and its significance is increased by its location as the first part of each mark. Moreover, "mail" is descriptive of applicant's services, and so "face" is the significant source-identifying element in the applied-for mark. Moreover, even though opposer itself does not use the term "facemail," industry writers have used the term to identify opposer's email and messaging applications (think "Big Blue for IBM). That evidence, too, supports opposer's claim. This evidence led to the conclusion that "Face" is the dominant element of both marks.

And so the Board concluded that the marks are more similar than dissimilar in appearance, sound, connotation, and commercial impression.

Finally, Facebook submitted the results of a likelihood of confusion survey, again conducted by Dr. Ford. Approximately 36.2% of respondents believed that applicant's services provided under the FACEMAIL mark were either offered or authorized by opposer, or that some business affiliation existed. The Board found that these results support a finding of likely confusion.

Applicant argued that opposer is a legal bully who uses "fraud, deceit, and an army of well-paid litigators to effectively crush any entity deemed a threat by its megalomaniacal leadership," and that opposer's history is well documented in the public domain and needs no further exposition by applicant. The Board was unimpressed by these assertions: it refused to take judicial notice of any facts purportedly underlying these accusations, found no supporting evidence in the record, and saw no egregious conduct in opposer's conduct of the opposition.

And so the Board sustained the opposition on the Section 2(d) ground, declining to reach opposer's dilution claim.